The requirements for requesting prioritized examination are set forth below. A request must meet the general requirements specified in subsection I.A. below, and also meet the specific requirements for either subsection I.B. (for a newly filed application) or subsection I.C. (for a request for continued examination).
The application must be a utility or plant nonprovisional application, including a continuing application (i.e., a continuation, continuation-in-part, or divisional application). The procedure for prioritized examination does not apply to design applications, reissue applications, provisional applications, or reexamination proceedings. The procedure for prioritized examination does not apply to international applications that have entered the national stage under 35 U.S.C. 371, except that such an application may undergo prioritized examination if an RCE is filed (see I.C. below). A continuing application will not automatically be given prioritized examination status based on a request filed in the parent application; each application (including each continuing application) must, on its own, meet all requirements for prioritized examination under 37 CFR 1.102(e). A utility or plant nonprovisional application filed under 35 U.S.C. 111(a) may claim priority to a foreign application under 35 U.S.C. 119(a) - (d) or (f) and remain eligible for prioritized examination.
Upon filing the request for prioritized examination, the following fees must be paid for the application:
Small entity and micro entity fee reductions are available for many of the above fees; see the current fees at www.uspto.gov/Fees. Note that a fee may be set by the USPTO to $0, and in such a case, that fee is considered to be paid and no additional payment is necessary for that fee. If any fee is unpaid at the time of filing of the application, the request for prioritized examination will be dismissed. However, if an explicit authorization to charge any additional required fees has been provided in the papers accompanying the application and the request, the fees will be charged in accordance with the authorization, and the request will not be dismissed for nonpayment of fees.
The application must contain, or be amended to contain, no more than four independent claims and no more than thirty total claims. In addition, the application must not contain any multiple dependent claims. After prioritized examination has been granted in an application, an amendment that results in more than four independent claims or thirty total claims, or a multiple dependent claim, will result in termination of prioritized examination.
The request for prioritized examination may be accepted if the requirements under 37 CFR 1.102(e) are satisfied and the limit for the number of requests for the year has not been reached. The number of granted requests for prioritized examination under 37 CFR 1.102(e) is limited to a maximum of 15,000 per fiscal year. The Office posts statistics, including the number of granted prioritized examination requests, on its website at www.uspto.gov/aia_implementation/patents.jsp. In addition, the Office will post a message in EFS-Web if/when the number of granted requests is close to the limit. If the limit is reached, the Office will turn off the ability to file a request for prioritized examination in EFS-Web.
Additional requirements must be met depending on whether prioritized examination is requested upon filing of a new application (Track One), see subsection I.B. or incident to filing a request for continued examination (PE-RCE), see subsection I.C.
It is strongly recommended that applicants use the Office’s certification and request form PTO/AIA/424 to request prioritized examination, but the form is not required. The form is available on EFS-Web and on the Office’s Internet website at www.uspto.gov/PatentForms. Failure to use form PTO/AIA/424 could result in the Office not recognizing the request or delays in processing the request. If applicant decides to use an applicant-created form for requesting prioritized examination, applicant’s form should be an equivalent to the Office’s form.
Any item submitted on the same day the request for prioritized examination is filed will be considered to have been filed with the request under 37 CFR 1.102(e).
A newly filed patent application may be granted Track One prioritized examination status if it meets the general conditions in subsection I.A. above, and the additional following conditions:
The application must be a utility or plant nonprovisional application, including a continuing application (i.e., a continuation, continuation-in-part, or divisional application), filed under 35 U.S.C. 111(a) on or after September 26, 2011. The application must be filed via the USPTO patent electronic filing system (EFS-Web) if it is a utility application. Plant applications must be filed in paper. Due to the need to limit the number of applications in the prioritized examination program in its initial stages, applications entering the national stage under 35 U.S.C. 371 are not eligible at the time of entry; see subsection I.C. below for prioritized examination of national stage entries under 35 U.S.C. 371 in which as RCE has been filed. However, an applicant who has filed an international application may participate in the prioritized examination program by filing a by-pass continuation; i.e., a new application filed in the United States under 35 U.S.C. 111(a) that claims the benefit of the earlier international application under 35 U.S.C. 365(c), rather than entering the national stage under 35 U.S.C. 371. In such a case, it is not necessary that the earlier international application have been filed in English in order to request prioritized examination of the 111(a) application; however, a translation is required in accordance with 37 CFR 1.52(b)(1).
A proper request for prioritized examination must include, on filing, a specification as prescribed by 35 U.S.C. 112 including at least one claim, and a drawing when necessary. The application must be filed with an executed application data sheet meeting the conditions specified in 1.53(f)(3)(i), or with the inventor’s oath or declaration (under 37 CFR 1.63 and 1.64 ) executed for each inventor. Such an application data sheet must include the legal name, mailing address, and residence (if not residing at the mailing address) for each inventor. Note that filing an application without the inventor’s oath or declaration requires payment of the surcharge set forth in 37 CFR 1.16(f).
The application must contain no more than four independent claims and no more than thirty total claims. If, at the time the request for prioritized examination is considered by the USPTO, the application does not meet this requirement, applicant will be notified of the deficiency through a decision on the request, which will provide one month for applicant to amend the claims consistent with the requirements for prioritized examination. In order to reduce Office processing and ensure that patent application publications are printed correctly, the Office strongly encourages applicants to file applications without any preliminary amendments.
The application must be filed with the basic filing fee, the search fee, the examination fee, any excess claims fees, and any application size fee. If applicable, any excess claims fees due because the number of independent claims exceeds three, as set forth in 37 CFR 1.16(h), and any excess claim fee due because the number of claims exceeds twenty, as set forth in 37 CFR 1.16(i), and any application size fee due because the specification and drawings exceed 100 sheets of paper, as set forth in 37 CFR 1.16(s), must be paid before Track One status will be granted. If, at the time the request for prioritized examination is considered by the USPTO, any of these three fees are required but have not been paid, applicant will be notified of the deficiency through a decision on the request. These three fees must be paid not later than one month from a first decision on the request for prioritized examination.
A nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) may be submitted together with a request for prioritized examination. However, the publication fee set forth in 37 CFR 1.18(d) still must be paid upon request for prioritized examination. If the application is not published, a refund of the publication fee may be requested as provided in subsection III below and in MPEP § 1126.
Color drawings may be filed with new nonprovisional utility patent applications under 35 U.S.C. 111(a) and in U.S. national stage applications under 35 U.S.C. 371 applications through EFS-Web; see MPEP § 502.05, subsection VIII. See also the Legal Framework for Patent Electronic System ((www.uspto.gov/patents-application-process/ filing-online/legal-framework-efs-web ) (October 2019)). A petition is still required for entry of color drawings; see MPEP § 608.02 subsection VIII.
If applicant discovers that a required item has been inadvertently omitted from the application filing, a follow-on EFS-Web submission may be filed, but only if the follow-on EFS-Web submission is submitted on the same day that the utility application and the prioritized examination request form are filed. For example, if an inventor’s oath or declaration or the filing fees are inadvertently omitted when the application is filed via EFS-Web, then applicant may submit the inventor’s oath or declaration or the filing fees as a follow-on submission directly into the application on the same day as the filing date of the application. Applicants are also reminded that only registered users of EFS-Web can submit follow-on documents via EFS-Web and that follow-on documents are documents filed after the initial submission of the application. Thus, applicant would need to be a registered user of EFS-Web to submit such a follow-on document on the same day the application was filed. See also MPEP § 502.05, subsection III. D. for examples describing implications raised when applicant inadvertently omits an item when filing an application electronically via EFS-Web.
Applicants may receive a notice regarding informalities in their application (e.g., a notice to file corrected application papers because the application papers are not in compliance with 37 CFR 1.52) which will delay a decision on the request for prioritized examination; however, the request for prioritized examination may still be granted if the request is otherwise compliant with 37 CFR 1.102(e)(1). Any pre-examination notice from the Office of Patent Application Processing will delay a decision on the request for prioritized examination until after applicant has filed a complete and timely reply to the pre-examination notice. Any request for an extension of time, including an extension of time for the purpose of responding to a pre-examination notice (e.g., Notice to File Missing Parts), will cause the application to be ineligible for further treatment under the prioritized examination program. A request for an extension of time prior to the grant of prioritized examination status will prevent such status from being granted.
If the request for prioritized examination is dismissed, applicant can file a petition under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper. Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the Office in not granting the request before filing such a petition under 37 CFR 1.181. Applicant may not refile a request for Track One prioritized examination in order to correct a deficiency in the request because a proper request for Track One prioritized examination (i.e., for prioritized examination of a newly-filed utility or plant application under 35 U.S.C. 111(a) and not for an RCE) requires that the request be included upon filing.
A pending patent application in which a request for continued examination has been filed may be granted PE-RCE prioritized examination status under the following conditions:
The application must be a non-reissue utility or plant nonprovisional application filed under 35 U.S.C. 111(a), or that has entered the national stage under 35 U.S.C. 371.
The publication fee set forth in 37 CFR 1.18(d) must be paid for the application, either previously or with the request for prioritized examination. Note that a fee may be set by the USPTO to $0, and in such a case, that fee is considered to be paid and no additional payment is necessary for that fee.
The PE-RCE request may be filed concurrently with, or subsequently to, the filing of a request for continued examination (RCE). However, the PE-RCE request must be filed before the mailing of the first Office action after the filing of the RCE. The conditions for filing an RCE are set forth in 37 CFR 1.114. Prosecution must be closed; i.e., the application is under appeal, the last Office action is a final action (37 CFR 1.113), a notice of allowance has been issued (37 CFR 1.311), or there has been an action that otherwise closes prosecution in the application. Any request for prioritized examination of an application in which there has been a request for continued examination is premised on the existence of a properly filed RCE. Prioritized examination will not be granted in an application where the RCE does not meet the requirements of 37 CFR 1.114.
Only a single such request for prioritized examination for a request for continued examination may be granted in an application. The prioritized examination program permits a single request to be granted under 37 CFR 1.102(e)(1) upon filing a new application under 35 U.S.C. 111(a), and a single request to be granted under 37 CFR 1.102(e)(2) upon filing a request for continued examination under 37 CFR 1.114.
Applicant may file a petition under 37 CFR 1.181 if applicant believes a decision dismissing a PE-RCE request is not proper. Applicant should review the reason(s) stated in the decision dismissing the PE-RCE request and make a determination that an error was made by the Office in not granting the request before filing such a petition under 37 CFR 1.181. Alternatively, applicant may choose to correct the deficiencies in the PE-RCE request by filing a new PE-RCE request for that same RCE. The new PE-RCE request must include any required fees and be timely; i.e., it must be filed prior to the mailing of a first Office action after the filing of the RCE.
The time periods set for reply in Office actions for applications undergoing prioritized examination will be the same as set forth in MPEP § 710.02(b). Where, however, an applicant files a petition for an extension of time to file a reply or files a request for suspension of action, the petition or request will be acted upon, but the prioritized examination of the application will be terminated. In addition, filing an amendment to the application which results in more than four independent claims, more than thirty total claims, or a multiple dependent claim will terminate the prioritized examination. Upon termination of prioritized examination, the application will be removed from the examiner’s special docket and placed on the examiner’s regular docket in accordance with its stage of prosecution.
The goal of the Office is to provide a final disposition within twelve months, on average, of the date that prioritized status was granted. The final disposition for the twelve-month goal means that within twelve months from the date prioritized status has been granted that one of the following occur: (A) mailing of a notice of allowance; (B) mailing of a final Office action; (C) filing of a notice of appeal; (D) completion of examination as defined in 37 CFR 41.102; (E) filing of a request for continued examination; or (F) abandonment of the application. An application under prioritized examination, therefore, would not be accorded special status during appeal or interference before the Patent Trial and Appeal Board (PTAB), or after the filing of a request for continued examination. As noted above, the submission of an amendment resulting in more than four independent claims or more than thirty total claims is not prohibited, but simply terminates the prioritized examination. Thus, upon mailing of a final rejection (at which point prioritized examination is terminated), applicants may amend the claims to place them in independent form where dependent claims were found allowable, or add new claims, subject only to the limitations applicable to any application under final rejection. See 37 CFR 1.116. Similarly, upon mailing of a notice of allowance, applicants may submit amendments to the claims, again subject only to the limitations applicable to any application that has been allowed. See 37 CFR 1.312. A patent that issues will not contain any indication on its face that it was processed via prioritized examination.
If a request for prioritized examination is dismissed, the prioritized examination fee set forth in 37 CFR 1.17(c) will be refunded. This fee will be refunded automatically (if paid) without the need for applicant to request such a refund. The processing fee set forth in 37 CFR 1.17(i) will be retained to cover the cost of processing the request. In accordance with 37 CFR 1.26, the application fees, including the basic filing fee, search fee, examination fee, and any required application size or excess claim fees cannot be refunded. Applicant may, however, request a refund of the search fee and any excess claims fees by filing a petition for express abandonment of the application in accordance with 37 CFR 1.138(d). Furthermore, applicant may request a refund of the publication fee in accordance with MPEP § 1126 if the application is not published under 35 U.S.C. 122(b).
As the termination of prioritized examination does not cause the prioritized examination fee to have been paid by mistake or in an amount in excess of that required, the termination of prioritized examination will not entitle the applicant to a refund of the prioritized examination fee. See 35 U.S.C. 42(d) and 37 CFR 1.26(a).
The Patent Prosecution Highway (PPH) speeds up the examination process for corresponding applications filed in participating patent offices. Under PPH, participating patent offices have agreed that when an applicant receives a final ruling from a first patent office that at least one claim is allowed, the applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending in a second patent office. PPH leverages fast-track examination procedures already in place among participating patent offices to allow applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing.
The USPTO participates in the Global PPH and IP5 PPH pilot programs, and also has PPH agreements with several intellectual property offices that are not yet included in the Global PPH. See www.uspto.gov/patents/init_events/pph/index.jsp for details and forms to request participation in, and to petition to make an application special under, the PPH program.
Whenever an examiner tenders his or her resignation, the supervisory patent examiner should see that the remaining time as far as possible is used in winding up prosecution in those applications with complex issues or involved records that the examiner is already familiar with (e.g., applications with RCEs and continuation applications) and getting as many of his or her amended cases as possible ready for final disposition.
Suspension of action (37 CFR 1.103 ) should not be confused with extension of time for reply (37 CFR 1.136 ). It is to be noted that a suspension of action applies to an impending Office action by the examiner whereas an extension of time for reply applies to action by the applicant. In other words, the action cannot be suspended in an application which contains an outstanding Office action or requirement awaiting reply by the applicant. It is only the action by the examiner which can be suspended under 37 CFR 1.103.
Suspension of action under 37 CFR 1.103(a) - (d) at the applicant’s request will cause a reduction in patent term adjustment accumulated (if any) under 37 CFR 1.703. The reduction is equal to the number of days beginning on the date a request for suspension of action was filed and ending on the date of the termination of the suspension. See 37 CFR 1.704(c)(1).
| Request, 37 CFR Section | Requirement | Fee(s), 37 CFR Section | Maximum length of Suspension |
|---|---|---|---|
| 1.103(a) | Petition with a showing of good and sufficient cause. | 1.17(g) | 6 months |
| 1.103(b) | Request at the time of filing a CPA | 1.17(i) | 3 months |
| 1.103(c) | Request at the time of filing an RCE | 1.17(i) | 3 months |
| 1.103(d) | See below in "Deferral of Examination" | 1.17(i) & 1.18(d) | 3 yrs. from earliest filing date for which a benefit is claimed under Title 35. |
A request that action in an application be delayed will be granted only under the provisions of 37 CFR 1.103, which provides for "Suspension of Action." A petition for suspension of action under 37 CFR 1.103(a) must:
If the requirements of 37 CFR 1.103(a) are met, the Office may grant the suspension of action for the specified period not to exceed six months. The suspension under 37 CFR 1.103(a) will begin on the day the request is filed. If the requirements of 37 CFR 1.103(a) are not met, applicants should expect that their applications, whether new or amended, will be taken up for action by the examiner in the order provided in MPEP § 708, Order of Examination.
The showing of good and sufficient cause should specifically explain what factors directly impact the applicant’s ability to presently prosecute the application for which the suspension of action has been requested. A statement referring to general circumstances (e.g. the world is experiencing a global pandemic) may not be found to be good and sufficient without a specific explanation of how these circumstances impact the application under examination. Non-limiting examples where good and sufficient cause may be found are:
A petition for suspension of action to allow applicant time to submit an information disclosure statement will be denied as failing to present good and sufficient reasons, since 37 CFR 1.97 provides adequate recourse for the timely submission of prior art for consideration by the examiner. Other non-limiting situations where a suspension request may be denied due to a lack of good and sufficient cause are:
In new applications, the mere inclusion in the transmittal form letter of a request that action be delayed cannot be relied upon to avoid immediate action in the application. However, applicant may consider filing a request for deferral of examination under 37 CFR 1.103(d) (see below for the requirements). Applicants should be aware of the possibility of requesting suspension of action by the Office under 37 CFR 1.103(b) or (c) for a period not exceeding three months at the time of filing a continued prosecution application (CPA) under 37 CFR 1.53(d) if the application is a design application, or a request for continued examination (RCE) under 37 CFR 1.114. Note that effective July 14, 2003, CPA practice does not apply to utility and plant applications. Many Technology Center (TC) art units and examiners have short pendency to first action, and new applications may be taken up for action before preliminary amendments are filed in those applications. Where a preliminary amendment and petition to suspend action have been filed, it would be helpful to telephone the examiner in that regard to avoid having the amendment and the first Office action cross in the mail. The following form paragraphs should be used to notify the grant or denial of the petition under 37 CFR 1.103(a):
Pursuant to applicant’s request filed on [1], action by the Office is suspended on this application under 37 CFR 1.103(a) for a period of [2] months. At the end of this period, applicant is required to notify the examiner and request continuance of prosecution or a further suspension. See MPEP § 709.
1. Maximum period for suspension is 6 months.
2. Only the Technology Center Director can grant second or subsequent suspensions. See MPEP § 1002.02(c). Such approval must appear on the Office letter.
Applicant’s request filed [1], for suspension of action in this application under 37 CFR 1.103(a), is denied as being improper. Action cannot be suspended in an application awaiting a reply by the applicant. See MPEP § 709.
A supplemental reply will be entered if it is filed within the period during which action is suspended by the Office under 37 CFR 1.103(a). See MPEP § 714.03(a) regarding supplemental reply.
Applicants may request a suspension of action by the Office under 37 CFR 1.103(b) or (c) for a period not exceeding three months in a continued prosecution application (CPA) filed under 37 CFR 1.53(d) if the application is a design application, or in a continued examination (RCE) filed under 37 CFR 1.114. The request for suspension must be filed at the time of filing of the CPA or RCE.
A supplemental reply will be entered if it is filed within the period during which action is suspended by the Office under 37 CFR 1.103(c). See MPEP § 714.03(a) regarding supplemental reply.
The Office will not grant the requested suspension of action unless the following requirements are met:
If the Office assigns a filing date to the design CPA, the request for suspension will be processed, even if the CPA was not accompanied by the CPA basic filing fee, the search fee, and the examination fee. The suspension request acts to suspend a first Office action by the examiner but will not affect the processing of the CPA for a missing part. The applicant will be given a notice that provides a time period of 2 months from the date of the notification to pay the CPA basic filing fee, the search fee, the examination fee, and the surcharge set forth in 37 CFR 1.16(f). Applicant must pay the CPA basic filing fee, the search fee, the examination fee, and the surcharge within 2 months to avoid the abandonment of the CPA. Pursuant to applicant’s request for suspension, the action by the Office will be suspended on the CPA for the period requested by the applicant, starting on the filing date of the CPA.
If the CPA or the RCE is improper (e.g., a filing date was not accorded in the CPA or the RCE was filed without a submission or the RCE fee), the Office will not recognize the request for suspension, and action by the Office will not be suspended. A notice of improper CPA or RCE will be sent to applicant as appropriate. The time period set in the previous Office communication (e.g., a final Office action or a notice of allowance) continues to run from the mailing date of that communication. If applicant subsequently files another RCE, the request for suspension should be resubmitted to ensure that the Office processes the request for suspension properly. The request for suspension of action will not be processed until the Office accords a filing date to the CPA or receives a proper RCE in compliance with 37 CFR 1.114.
If the CPA or the RCE is properly filed, but the request for suspension is improper (e.g., the request for suspension was filed untimely or without the processing fee set forth in 37 CFR 1.17(i) ), action by the Office will not be suspended on the application. The Office will process the CPA or RCE and place the application on the examiner’s docket. The examiner will notify the applicant of the denial of the request in the next Office communication using the following form paragraph:
Applicant’s request filed [1], for suspension of action in this application under 37 CFR 1.103(b) or (c) is denied as being improper. The request was (1) not filed at the time of filing a CPA or RCE, and/or (2) not accompanied by the requisite fee as set forth in 37 CFR 1.17(i). See MPEP § 709.
